Need advice :: Patent agent (not an attorney) in-house vs biglaw

Started by kmpatbar, 06-14-16 at 04:28 AM

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kmpatbar

Hi,

I'm looking for some advice. I've been working for 2+ years as a patent agent at a big law, transitioned from an engineering position of 7+years. I have an opportunity to go in-house as a patent agent for a very promising, well funded start up, equal or better pay. This is kind of new to me, since I thought most companies look for attorneys and not agents. Having said that, would it be a good move to go in-house as a patent agent? Is there a career path for a patent agent within tech companies?

smgsmc

I was waiting for someone with direct experience in your scenario to respond.  Since no one has, I'll offer you what advice I can.  I became a patent agent after 20+ yrs as a research scientist and engineer.  I never worked in big law.  I've worked in a small patent boutique and in a small patent group of a mid-size GP firm.

I'm sure one of the biggest difficulties you had to make in transitioning from an engineer to a patent agent in a law firm was having the billable hour clock constantly ticking away in the background and accounting for every 0.1 hr of your working day.  Plus constantly being vigilant that you couldn't always do the good job you wanted to do because of time constraints (especially with flat rate jobs).  So I longed for an in-house position.  In addition to scouring posts, I also consulted several experienced recruiters.  Here's what I found.

(1) Compared to the number of patent agent positions in law firms, the number of in-house patent agent positions is relatively small.

(2) With one exception, in-house positions generally prefer 5+ yrs law firm experience (3 yrs as an absolute min requirement).  They want someone ready-to-rip.  The fact that you are being considered with only 2+ yrs experience is unusual (do you have some rare technical specialty?).  The exception is that some companies have programs that transition senior scientists and engineers (already working for the company) into patent work.

(3) A couple of in-house positions I interviewed for wanted a patent agent not only to handle patent prosecution, but also to provide administrative support to the patent attorneys, work normally done by paralegals and docketing clerks at firms.  I didn't pursue those at all once it became clear what they wanted.

(4) One startup on the East Coast was very interested in me because of my technical background.  And it was a position I really wanted.  Working on challenging technology, working directly with PhD scientists and engineers, working on patent applications of real substance (real IP rather than PR BS).  Although timeliness was an important factor, getting it right was more important.  Unfortunately, they didn't get the next round of venture capital.

(5) Where is your startup?  A recruiter told me that if I wished to pursue the position I wanted I would need to go to Silicon Valley.  He told me that it was common for startups there to hire in-house patent agents, rather than pay outrageous law firm fees.  The patent agents would be paid less than law-firm salaries, but would be given stock options.  Typically, they would crank out patent applications for ~3 yrs and then be done with the portfolio.  They would then move down the hall to a new startup and repeat the process.  If any of the startups hit it big time, they could cash in their stock options.  I never confirmed this scenario directly, but this was a recruiter I trusted.  I was rooted in the East Coast, so I didn't pursue this path.

(6) So, if you're tired of billable hours and time sheets and flat rates, and want more challenging and thorough work, consider the startup (especially if their pay is comparable to your current pay).  With only 2+ yrs experience though, you may not be ready unless there is an experienced attorney or agent there that can continue to mentor you (for another year or so).  If you're in Silicon Valley, once this stint is over, you could probably find a similar stint.  But if you're not in Silicon Valley, a similar stint may be hard to come by.  In which case, you may have to transition back to a law firm (which may be difficult if you're no longer accustomed to a billable clock ticking away).  In the best case scenario, the startup hits the big time, and you stay on.  Just a few things for you to ponder.  Good luck! 

kmpatbar

smgsmc,

Thanks a lot for that valuable insight.

To respond to some of your questions:

Yes, this is in the silicon valley. Yes, there is a general patent counsel (seems like a good mentor) looking over most of the company's IP work. The work does seem interesting and challenging owing to the technology they are working in. The startup is primarily working in stealth mode, hence the requirement for in-house agents. And yes, I do have some technical expertise they are looking for.

My biggest concern is the startup going out of business in case things dont work well. And second concern is that I think I may not be ready completely for an in-house gig. I still think I have a lot to learn on prosecution strategies, which probably may be beneficial long term. The other thing that I am still debating on is going to law school. I don't think I may move out of patent prosecution, but looks like law school may fetch a better opportunity in future at stable/established companies vs startups. I basically am not sure if the risk right of joining a startup is worth it.

And yes, billables suck but I guess they are manageable.

kamilien1

@kmpatbar, nice job on the offer!

I haven't been to the other side, namely, big law firm, however, I've noticed the agents who I spoke to at big law firms are very sharp at drafting, and much more confident in their abilities. They are somewhat up to date with case law, and my take is their bosses are the attorneys, so they have to defer to the attorneys on some key issues. They also value their time and I don't see them too often.

I met a few solo practitioners, as well as in-house ones. It's a mixed bag. The solo practitioners work twice as hard, however, on their own clock, at home, in their boxers. The in-house ones as @smgsmc said: 5-years in-house before getting onboard. It could be the case that either you're sharp, the startup doesn't know any better, or the startup values someone with your specific technical skills and "good enough" drafting.

If your biggest concern is that the startup will go out of business, why even work at a startup? You know that most fail, right? Also, don't forget, in their eyes, if you have a technological know-how, you will be the difference between $100mm and $1bln in valuation, so they will want you as much as you might want the job. However, if there's already general patent counsel, I'm confused....is he part-time, attending to other matters, or already at drafting-capacity? Why do they feel the need to hire someone else? A startup usually has 1 or no IP people.

Point 3 is true -- I'm at a startup now, and I'm dealing with some docketing stuff. I also deal with the workflow, collecting the ideas, rating them, getting them vetted and checked off by a committee (and it's hard to get the committee's time!), and answering a lot of general IP questions to the engineers and business people. Unless it is clearly defined up front, you will be a "patent agent and" patent agent. Meaning, you'll do both the drafting+a bunch of other stuff, because, you know, it's a startup, and it's Silicon Valley. You should ask up front, and be prepared to get an answer that you find later to be wrong. The CEO is most likely interviewing you, and he may not have had IP experience before, or he might sound like he knows the scope of your job. Maybe with IP general counsel, if the guy is full-time, he might give you a good idea of how many drafts are expected, the actual tech areas, if there's a chance they will "pivot", etc.

So it's both lifestyle and job tasks that are different. Take the risk if you have an interest -- if you fail, you can always go back to a law firm, right? Those will be around for a hundred years...



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